Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 1 of 17 PageID #: 343
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:21-cv-00072-JRG
`(Lead Case)
`
`CASE NO. 2:21-cv-00024-JRG
`(Member Case)
`
`CASE NO. 2:21-cv-00026-JRG
`(Member Case)
`
`CASE NO. 2:21-cv-00029-JRG
`(Member Case)
`
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`§
`§
`§
`§
`§
`§
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` §
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`§
`§
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`§
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` §
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`§
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` §
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`§
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`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`T-MOBILE USA, INC., AND T-MOBILE
`US, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`LYFT, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`d/b/a UBER,
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`WHATSAPP, INC.
`
`DEFENDANT UBER TECHNOLOGIES, INC.’S MOTION TO STAY PENDING
`RESOLUTION OF STANDING ISSUE
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 2 of 17 PageID #: 344
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`FACTUAL BACKGROUND ..............................................................................................2
`
`A.
`
`B.
`
`Mr. Rice Was Employed by Microsoft and Assigned His Inventions to
`Microsoft When He Joined Microsoft. ....................................................................2
`
`The Non-Rice Patents Asserted by AGIS Have Recognized Validity
`Issues. .......................................................................................................................4
`
`III.
`
`ARGUMENT .......................................................................................................................5
`
`A.
`
`Microsoft Is a Co-Owner to the ’724, ’100, and ’838 Patents. ................................5
`
`1.
`
`2.
`
`3.
`
`Microsoft’s Employment Agreement Automatically Transferred
`Rights. ..........................................................................................................5
`
`Mr. Rice’s Assignments to AGIS, Inc. Are Invalid, Because He
`Already Assigned His Alleged Inventions to Microsoft. .............................6
`
`Without Microsoft—Who Cannot Be Forced to Join the Suit—
`AGIS Lacks Standing to Allege Infringement of the ’724, ’100,
`and ’838 Patents. ..........................................................................................6
`
`Statutory Standing Defects Are Threshold, Case-Dispositive Issues. .....................7
`
`Staying the Case And Ordering a Procedural Schedule on the Standing
`Issue Is Warranted....................................................................................................8
`
`1.
`
`2.
`
`3.
`
`Given That Standing Is a Threshold Issue, Courts Routinely Stay
`Cases and Order Discovery. .........................................................................8
`
`AGIS Cannot Claim Prejudice From a Stay. .............................................10
`
`Staying The Case At This Early Stage Will Simplify the Issues. ..............10
`
`B.
`
`C.
`
`CONCLUSION ..................................................................................................................10
`
`IV.
`
`
`
`i
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 3 of 17 PageID #: 345
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Alzheimer’s Inst. of Am. v. Elan Corp. PLC,
`2011 WL 6748634 (N.D. Cal. Dec. 22, 2011) .......................................................................7, 8
`
`AntennaSys, Inc. v. AQYR Techs., Inc.,
`976 F.3d 1374 (Fed. Cir. 2020)..............................................................................................6, 7
`
`Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc.,
`583 F.3d 832 (Fed. Cir. 2009), aff’d, 563 U.S. 776, 131 S. Ct. 2188, 180 L.
`Ed. 2d 1 (2011) ......................................................................................................................5, 6
`
`Belfer Cosms., LLC v. Nordstrom, Inc.,
`2016 WL 8792318 (S.D. Tex. Feb. 26, 2016) ...........................................................................8
`
`ESN, LLC v. Cisco Sys., Inc.,
`685 F. Supp. 2d 631 (E.D. Tex. 2009) ...................................................................................5, 9
`
`Ethicon, Inc. v. U.S. Surgical Corp.,
`135 F.3d 1456 (Fed. Cir. 1998)..................................................................................................7
`
`FilmTec Corp. v. Allied-Signal, Inc.,
`939 F.2d 1568 (Fed. Cir. 1991)..................................................................................................5
`
`Innovative Patented Tech., LLC v. Samsung Elecs. Co., Ltd.,
`2008 WL 27269414 (S.D. Fla. July 10, 2008) ...........................................................................9
`
`Israel Bio-Engineering Project v. Amgen Inc.,
`475 F.3d 1256 (Fed. Cir. 2005)..................................................................................................6
`
`Keith Manufacturing Co. v. Cargo Floor B.V.,
`No. 5:15-cv-9-CMC (E.D. Tex. Oct. 27, 2017) .........................................................................7
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................8
`
`Mullally v. Jones,
`No. 2:05-cv-00154 (D. Nev. Aug. 21, 2006) .............................................................................8
`
`Optimal Golf Sols., Inc. v. Altex Corp.,
`2015 WL 93434 (N.D. Tex. Jan. 7, 2015) .................................................................................7
`
`San Francisco Technology, Inc. v. Adobe Systems Inc.,
`2010 WL 1640397 (N.D. Cal. Apr. 19, 2010) .......................................................................7, 8
`
`ii
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 4 of 17 PageID #: 346
`
`Spring Pharms., LLC v. Retrophin, Inc.,
`2019 WL 1558744 (E.D. Pa. Apr. 10, 2019) .............................................................................8
`
`iii
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 5 of 17 PageID #: 347
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`I.
`
`INTRODUCTION
`
`We learn early in life that when we make a promise and give something to another, it’s
`
`gone. It no longer belongs to us, so we can’t give it to someone else. Unfortunately, that lesson
`
`appears to have been forgotten in this case.
`
`Three of the five asserted patents name two inventors: Malcolm K. Beyer and Christopher
`
`R. Rice. Mr. Beyer claims to have founded Plaintiff AGIS Software Development LLC (“AGIS”),
`
`or at least its predecessor, and, based on the facts currently known to it, Defendant Uber
`
`Technologies, Inc. (“Uber”) has no basis to challenge his assignment of patent rights to the
`
`company.
`
`The facts surrounding Mr. Rice’s purported assignments, however, lead to a different
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`conclusion. Mr. Rice joined Microsoft in 2005. In 2005, Microsoft employee agreements included
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`a provision that required the employee—at the time of their employment—to then grant, transfer,
`
`and assign to Microsoft all rights, title and interest to any inventions the employee may develop.
`
`Uber contends Mr. Rice executed such an agreement and, by doing so, he promised to and gave to
`
`Microsoft his inventions. But after joining Microsoft, and while still a Microsoft employee,
`
`Mr. Rice apparently ignored that promise and tried to give away rights he had already given to
`
`Microsoft. Indeed, in 2006 and again in 2015, Mr. Rice executed assignments for his inventions
`
`to AGIS. But as that early life lesson taught us, we can’t give something away twice; Mr. Rice
`
`had nothing to give to AGIS in 2006 and 2015. Microsoft is thus a co-owner of the three patents
`
`that name Mr. Rice as an inventor.
`
`All co-owners of a patent must join a case alleging infringement of the patent. Absent all
`
`co-owners, the case cannot proceed. That is clear. Microsoft is not a plaintiff to this case, and the
`
`case cannot proceed as to the three patents co-owned by Microsoft because AGIS lacks statutory
`
`standing. It is also clear that one co-owner cannot compel another co-owner to join the suit. This
`
`1
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`

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`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 6 of 17 PageID #: 348
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`leads to the same result: The case cannot proceed.
`
`The publicly available information all lead to this conclusion, but that information does not
`
`appear within the four corners of AGIS’s Complaint. Thus, Uber cannot avail itself of Fed. R.
`
`Civ. P. 12(b)(6) to resolve this critical issue. Nonetheless, the Federal Circuit has stressed that the
`
`issue of statutory standing is a threshold issue—one a court must resolve before claim construction
`
`and before other substantive activities. After all, neither the Court nor the parties should expend
`
`valuable resources litigating issues that the Court cannot resolve. Respectfully, therefore, Uber
`
`asks that this Court avoid that potential waste by (1) ordering expedited discovery focused on this
`
`standing issue, (2) scheduling a hearing to resolve the issue, and (3) staying all other proceedings
`
`until the standing issue is resolved.1
`
`II.
`
`FACTUAL BACKGROUND
`
`A. Mr. Rice Was Employed by Microsoft and Assigned His Inventions to
`Microsoft When He Joined Microsoft.
`
`AGIS’s Complaint alleges infringement of five related patents—U.S. Patent Nos.
`
`7,031,728 (“’728 Patent”), 7,630,724 (“’724 Patent”), 8,213,970 (“’970 Patent”), 10,299,100
`
`(“’100 Patent”), and 10,341,838 (“’838 Patent”) (collectively, the “Asserted Patents”). The
`
`Asserted Patents all trace their history, directly or indirectly, to the ’728 Patent, which was filed
`
`September 21, 2004 and names Malcolm Beyer as its sole inventor. In its Complaint, AGIS alleges
`
`the Asserted Patents disclose and claim location-based technologies. See, e.g., Compl. at ¶¶ 24,
`
`50, 51, 82, 84, 99, 101, 102.
`
`Through a substantial series of continuation-in-part and continuation applications,
`
`Mr. Beyer expanded the portfolio of patents beyond the ’728 Patent. That expansion did not occur
`
`
`1 Uber filed a motion to dismiss concurrently with this motion. Uber did so because filing this
`motion to stay does relieve Uber of its obligation to respond to the Complaint.
`
`2
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 7 of 17 PageID #: 349
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`solely based on Mr. Beyer’s work. Instead, as the covers of the ’724, ’100 and ’838 Patents show,
`
`Christopher R. Rice also contributed to the alleged inventions. But when Mr. Rice attempted to
`
`assign rights to his contributions as an inventor to AGIS’s predecessor–Advanced Ground
`
`Information Systems, Inc. (“AGIS, Inc.”)—Uber contends, based on publicly available
`
`information, that Mr. Rice had already assigned those rights to Microsoft.
`
`Based on his public LinkedIn profile, Mr. Rice joined Microsoft in 2005 and remained until
`
`2016. Ex. 1. Mr. Rice’s LinkedIn profile also reports that he worked on location-based
`
`technologies such as, for example, “networking systems” and “location determination cloud
`
`services.” Mr. Rice is the named co-inventor on several Microsoft patents, including U.S. Patent
`
`Nos. 7,986,953; 8,618,984; 9,554,323; 10,382,305; 10,506,646; and 10,582,550. Consistent with
`
`the description in his LinkedIn Profile, at least one of these patents confirms that Mr. Rice’s work
`
`at Microsoft included location-based technology and thereby overlaps with the technology claimed
`
`in the Asserted Patents. See, e.g., U.S. Patent No. 8,618,984, titled “Selecting Beacons for
`
`Location Inference.” Ex. 2.
`
`Uber contends that when Mr. Rice began his employment at Microsoft, he was required to
`
`sign an employment agreement. The Microsoft employment agreement in effect in 2005 included
`
`an obligation for all employees “to grant and [] hereby grant, transfer, and assign to MICROSOFT”
`
`all rights to any inventions conceived during employment. Ex. 3 (hereinafter, the “2005
`
`Agreement”). Specifically, the relevant provision in the 2005 Agreement provides:
`
`I will promptly and fully disclose to MICROSOFT any and all inventions,
`discoveries, designs, developments, improvements and trade secrets, whether or not
`patentable (collectively “Inventions”) that I solely or jointly may conceive,
`develop, reduce to practice or otherwise produce during my employment with
`MICROSOFT. Subject to the NOTICE below, I agree to grant and I hereby grant,
`transfer, and assign to MICROSOFT all my rights, title and interest in and to such
`inventions.
`
`
`
`3
`
`

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`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 8 of 17 PageID #: 350
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`Id. at 1. Thus, provided that Mr. Rice signed the 2005 Agreement upon joining Microsoft, and
`
`particularly given that the alleged technology of the AGIS patents overlaps with his work at
`
`Microsoft, he would have assigned to Microsoft all right, title and interest to any inventions
`
`conceived during his employment. Despite the terms of the 2005 Agreement, and having already
`
`assigned his rights to the ’724, ’100, and ’838 Patents to Microsoft in 2005, Mr. Rice executed
`
`assignments to AGIS, Inc. in 2006 and 2015. Exs. 4, 5.
`
`Prior to filing this motion, Uber wrote AGIS on April 2, 2021 to notify it of this co-
`
`ownership issue. Ex. 6. With that letter, Uber included copies of public information demonstrating
`
`that Mr. Rice was employed by Microsoft when he executed the assignments to AGIS and a copy
`
`of the publicly available 2005 Agreement. Based on that information, Uber explained that
`
`Mr. Rice had automatically assigned to Microsoft his rights to the alleged inventions of the ’724,
`
`’100 and ’838 Patents upon execution of his Microsoft employment agreement. On April 21, 2021,
`
`AGIS responded by questioning Uber’s reliance on a publicly available 2005 Agreement. Notably,
`
`AGIS did not provide Mr. Rice’s employment agreement or otherwise challenge that he signed an
`
`employment agreement in 2005 with Microsoft or Mr. Rice’s overlapping employment history.
`
`Ex. 7.
`
`B.
`
`The Non-Rice Patents Asserted by AGIS Have Recognized Validity Issues.
`
`The other two asserted patents that do not name Mr. Rice as an inventor—the ’728 Patent
`
`and ’970 Patent—have previously been litigated by Mr. Beyer through AGIS, Inc. and AGIS. The
`
`’728 Patent was litigated in S.D. Florida in 2014-15 and concluded with a jury finding no
`
`infringement and the court awarding the defendant attorney’s fees. After appeal to the Federal
`
`Circuit, many of the claims of the ’728 patent were affirmed invalid. Until AGIS’s recent assertion
`
`of the ’728 Patent, and despite having filed additional cases asserting other patents, the ’728 Patent
`
`has sat on the shelf.
`
`4
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 9 of 17 PageID #: 351
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`The ’970 Patent is one of those patents that AGIS has asserted since that first case in
`
`Florida; in fact, AGIS asserted the ’970 Patent in this Court. Just this past February, on the eve of
`
`trial, the Court stayed the litigation against Google (Case No. 2-19-cv-00361-JRG, Dkt. No. 219),
`
`because all ’970 Patent claims not previously found invalid are currently subject to an ex parte
`
`reexamination that includes claim 10 asserted here. In that order, this Court noted that “[t]he
`
`asserted claims which have been rejected in the reexamination proceedings have a high likelihood
`
`of being modified in some material way in response to their rejection” and that “[i]t is unlikely
`
`that [the asserted claims] will stay as they were when suit was originally filed.” Id. at 5.
`
`III. ARGUMENT
`
`A. Microsoft Is a Co-Owner to the ’724, ’100, and ’838 Patents.
`
`1.
`
`Microsoft’s Employment Agreement Automatically Transferred
`Rights.
`
`According to well-established Federal Circuit precedent, an employment agreement that
`
`includes “hereby assigns” indicates a present assignment of future inventions. See, e.g., Bd. of
`
`Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 842 (Fed.
`
`Cir. 2009), aff’d, 563 U.S. 776, 131 S. Ct. 2188, 180 L. Ed. 2d 1 (2011) (“[T]he VCA’s language
`
`of ‘do hereby assign’ effected a present assignment of Holodniy’s future inventions to Cetus.”).
`
`Thus, pursuant to the 2005 Agreement, Microsoft “immediately gained equitable title” to Rice’s
`
`inventions, and “once the invention[s] came into being[,] the transfer of title would occur by
`
`operation of law.” See id.; see also FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568, 1573
`
`(Fed. Cir. 1991); see also ESN, LLC v. Cisco Sys., Inc., 685 F. Supp. 2d 631, 639-42 (E.D. Tex.
`
`2009) (granting motion to dismiss for lack of standing based on employment agreement and
`
`finding that invention was “automatically assigned” pursuant to the agreement). As discussed
`
`above, Uber contends that Mr. Rice would have signed an employment agreement that included a
`
`5
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`

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`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 10 of 17 PageID #: 352
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`present assignment of all inventions. Given this, at the time Mr. Rice joined Microsoft, he assigned
`
`to Microsoft his rights to the alleged inventions disclosed in the ’724, ’100, and ’838 Patents.
`
`2.
`
`Mr. Rice’s Assignments to AGIS, Inc. Are Invalid, Because He Already
`Assigned His Alleged Inventions to Microsoft.
`
`As explained, the ’724, ’100, and ’838 Patents name Mr. Rice as a co-inventor with
`
`Malcolm Beyer. During his employment with Microsoft, on June 19, 2006, and subsequently on
`
`April 23, 2015, Mr. Rice executed assignments directed to the alleged inventions disclosed in these
`
`patents to AGIS, Inc. Exs. 4, 5. The 2006 assignment purports to cover the ’724 Patent, and the
`
`2015 assignment purports to cover the ’100 and ’838 Patents. But these assignments are invalid
`
`because, pursuant to the terms of the 2005 Agreement, Mr. Rice had already assigned any invention
`
`for which he had rights to Microsoft—making Microsoft a co-owner of the asserted patents. See
`
`Leland., 583 F.3d at 842 (“[B]ecause Cetus’s legal title vested first, Holodniy no longer retained
`
`his rights, negating his subsequent assignment to Stanford during patent prosecution.”).
`
`3. Without Microsoft—Who Cannot Be Forced to Join the Suit—AGIS
`Lacks Standing to Allege Infringement of the ’724, ’100, and ’838
`Patents.
`
`A plaintiff’s failure to join a co-owner forestalls the plaintiff’s “ability to satisfy the
`
`statutory prerequisites for bringing an infringement suit.” AntennaSys, Inc. v. AQYR Techs., Inc.,
`
`976 F.3d 1374, 1378-79 (Fed. Cir. 2020). Microsoft’s ownership interest in the asserted patents
`
`deprives AGIS of the ability to bring an infringement suit on its own. As co-owners of the ’724,
`
`’100, and ’838 Patents, both Microsoft and AGIS must be joined as plaintiffs in order to satisfy
`
`the statutory prerequisites to bring suit. Israel Bio-Engineering Project v. Amgen Inc., 475 F.3d
`
`1256, 1264-65 (Fed. Cir. 2005) (“Where one co-owner possesses an undivided part of the entire
`
`patent, that joint owner must join all the other co-owners to establish standing. . . . Absent the
`
`voluntary joinder of all co-owners of a patent, a co-owner acting alone will lack standing.”); see
`
`6
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 11 of 17 PageID #: 353
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`also AntennaSys, 976 F.3d at 1378 (failure to join all co-owners as plaintiffs impacts a party’s
`
`ability to satisfy the statutory prerequisites for bringing an infringement suit); Ethicon, Inc. v. U.S.
`
`Surgical Corp., 135 F.3d 1456, 1467 (Fed. Cir. 1998) (“An action for infringement must join as
`
`plaintiffs all co-owners.”). Moreover, Microsoft, as a co-owner, cannot be forced to involuntarily
`
`join the suit. See Ethicon, 135 F.3d at 1468; see also AntennaSys, 976 F.3d at 1378 (“We have
`
`also held that a non-consenting co-owner or coinventor can never be involuntarily joined in an
`
`infringement action . . . because ‘the right of a patent co-owner to impede an infringement suit
`
`brought by another co-owner is a substantive right.’”). Because Microsoft has not joined—and
`
`cannot be forced to join—the action as a co-plaintiff, AGIS cannot satisfy the statutory
`
`requirements to bring suit for infringement for the ’724, ’100, and ’838 Patents (Counts II, IV, and
`
`V).
`
`B.
`
`Statutory Standing Defects Are Threshold, Case-Dispositive Issues.
`
`“[W]hether [the plaintiff] meets the[] statutory prerequisites for bringing an infringement
`
`claim is a threshold question that both [the Federal Circuit] and the district court must resolve
`
`before reaching the district court’s claim construction and summary judgment rulings.”
`
`AntennaSys, 976 F.3d at 1378-79 (emphasis added); see also id. at 1377 (“[W]hether a patent co-
`
`owner must be joined is a threshold issue that must be resolved first.”). District courts have also
`
`routinely recognized standing issues as threshold issues that require resolution early in the case.
`
`See, e.g., Keith Manufacturing Co. v. Cargo Floor B.V., No. 5:15-cv-9-CMC, slip op. at 6, Dkt.
`
`No. 204 (E.D. Tex. Oct. 27, 2017) (“Standing to sue is a threshold requirement in every federal
`
`case.”); Optimal Golf Sols., Inc. v. Altex Corp., 2015 WL 93434, at *2 (N.D. Tex. Jan. 7, 2015)
`
`(addressing the “threshold issue” of standing based on patent ownership dispute); San Francisco
`
`Technology, Inc. v. Adobe Systems Inc., 2010 WL 1640397 at *4 (N.D. Cal. Apr. 19, 2010) (staying
`
`case pending resolution of the “threshold issue of standing” by the Federal Circuit); Alzheimer’s
`
`7
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 12 of 17 PageID #: 354
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`Inst. of Am. v. Elan Corp. PLC, 2011 WL 6748634, at *2 (N.D. Cal. Dec. 22, 2011) (recognizing
`
`that resolution of the standing issues is “potentially dispositive of this entire action, so that
`
`proceeding on Defendants’ motions could result in unnecessary use of the Court’s and the parties’
`
`time and resources”).
`
`C.
`
`Staying the Case And Ordering a Procedural Schedule on the Standing Issue
`Is Warranted.
`
`It is within the Court’s inherent power to control its own docket and stay proceedings.
`
`Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). When determining whether to stay a case, courts
`
`typically consider three factors: (1) whether the stay will unduly prejudice the nonmoving party;
`
`(2) whether the proceedings before the court have reached an advanced stage; and (3) whether the
`
`stay will result in simplifying the case before the court. Belfer Cosms., LLC v. Nordstrom, Inc.,
`
`2016 WL 8792318, at *5–6 (S.D. Tex. Feb. 26, 2016) (collecting cases). Given that standing is a
`
`threshold inquiry, Uber respectfully requests that the Court stay this case until the Court resolves
`
`whether AGIS has standing to assert the ’724, ’100, and ’838 Patents; Uber further requests that
`
`the Court impose a schedule by which the parties will prioritize discovery related to the issue and
`
`presentation of the issue to the Court.
`
`1.
`
`Given That Standing Is a Threshold Issue, Courts Routinely Stay Cases
`and Order Discovery.
`
`Courts routinely stay cases pending resolution of standing issues and order the parties to
`
`conduct discovery. Elan Corp., 2011 WL 6748634 at *7 (granting stay pending resolution of
`
`“potentially dispositive” standing issue); Adobe, 2010 WL 1640397 at *4 (“Mere delay in any
`
`eventual monetary recovery is not sufficient to require going forward where the threshold issue of
`
`standing can be conclusively resolved by waiting for the Federal Circuit to rule.”); Spring Pharms.,
`
`LLC v. Retrophin, Inc., 2019 WL 1558744 at *6 (E.D. Pa. Apr. 10, 2019) (granting 90-day stay to
`
`allow for standing discovery); Mullally v. Jones, No. 2:05-cv-00154, slip op. at 3, Dkt. No. 142
`
`8
`
`

`

`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 13 of 17 PageID #: 355
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`(D. Nev. Aug. 21, 2006) (“Discovery and trial of the issue regarding ownership of the patents and
`
`related intellectual property rights shall proceed first, followed, if necessary, by discovery and trial
`
`of the issues of liability and damages for alleged violations of Plaintiff’s ownership rights.”);
`
`Innovative Patented Tech., LLC v. Samsung Elecs. Co., Ltd., 2008 WL 2726914, at *2 (S.D. Fla.
`
`July 10, 2008) (staying case pending another court’s decision on ownership issue).
`
`Recognizing that the Court cannot resolve this issue without more information, Uber
`
`requests the following discovery:
`
`• Discovery of AGIS, including five interrogatories, ten document requests, and a
`Rule 30(b)(6) deposition;
`• A third-party subpoena (covering documents and a deposition) to Microsoft
`Corporation;
`• Discovery of Christopher R. Rice, including a deposition and document requests.
`
`
`Uber also proposes that the discovery be completed within sixty days, provided that third-party
`
`Microsoft Corporation does not delay its response to the subpoena.
`
`Fourteen days after completion of discovery, and because AGIS bears the burden of
`
`establishing standing, ESN, 685 F. Supp. 2d at 639, Uber proposes the following briefing schedule:
`
`AGIS files an opening brief, together with evidence, supporting its assertion that it is the sole
`
`owner of the Asserted Patents and has standing to bring this suit without Microsoft; Uber files its
`
`response within fourteen days. To the extent AGIS desires, it may file a reply seven days thereafter
`
`and Uber may file a surreply seven days later. Consistent with the Court’s schedule, Uber asks
`
`that the Court set a hearing to address the parties’ briefing and evidence.
`
`Staying the case until the Court can resolve the standing issue will preserve the parties’ and
`
`the Court’s resources by avoiding a situation where the parties exchange contentions and briefs on
`
`patents AGIS cannot assert.
`
`9
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`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 14 of 17 PageID #: 356
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`2.
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`AGIS Cannot Claim Prejudice From a Stay.
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`AGIS will suffer no prejudice by prioritizing this issue and deferring proceedings on the
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`remaining asserted patents. All claims of the ’970 Patent are subject to an ex parte reexamination
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`and this Court has already stayed pending litigation involving that patent. Moreover, as this Court
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`recognized in that stay order, given the nature of ex parte reexamination proceedings, the claims
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`of the ’970 Patent are likely to change, be dropped or cancelled during that proceeding—resulting
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`in a serious risk of wasted resources. And despite filing numerous other lawsuits, one of which
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`included the ’728 Patent, AGIS nonetheless has long waited to assert the ’728 Patent against Uber.
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`It can hardly claim prejudice now.
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`3.
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`Staying The Case At This Early Stage Will Simplify the Issues.
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`This case was filed on January 29, 2021, and the scheduling conference was only recently
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`set for May 12, 2021. Dkt. No. 15. A docket control order has not yet been entered, and the parties
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`have not exchanged infringement and invalidity contentions. Waiting until the Court resolves the
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`standing issue will simplify this case. Given the default schedule in this District, the claim
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`construction process starts shortly after the exchange of contentions. Staying the claims until the
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`threshold standing issue is resolved will thus allow the parties and the Court to proceed only on
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`patents that AGIS can assert—saving both the parties’ and the Court’s resources and time. In these
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`circumstances, a stay of the case is warranted.
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`AGIS has asserted patents against three other defendants before this Court. While there is
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`not a complete overlap in asserted patents, there is an asserted patent in each action that names
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`Mr. Rice as a co-inventor and presents the same co-ownership issue. Thus, the Court will have to
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`address the standing issue as a threshold issue in those other matters.
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`IV. CONCLUSION
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`For the reasons stated above, Uber respectfully requests that the Court stay this case
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`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 15 of 17 PageID #: 357
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`pending resolution of the standing issue and issue a scheduling order that enables the Court and
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`parties to address this threshold issue. A proposed discovery and briefing schedule is set forth in
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`the attached proposed order.
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`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 16 of 17 PageID #: 358
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`Respectfully submitted,
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`Dated: April 23, 2021
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`
`
`By:
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`
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`
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`/s/ Mark N. Reiter
`Mark N. Reiter
`Texas State Bar No. 16759900
`mreiter@gibsondunn.com
`Robert A. Vincent
`Texas State Bar No. 24056474
`rvincent@gibsondunn.com
`Nathan R. Curtis
`Texas State Bar No. 24078390
`ncurtis@gibsondunn.com
`Ashbey N. Morgan
`Texas State Bar No. 24106339
`anmorgan@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`2001 Ross Avenue, Suite 2100
`Dallas, TX 75201-6912
`Telephone: 214.698.3360
`Facsimile: 214.571.2907
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 90.934.8450
`Facsimile: 903.934.9257
`Email: melissa@gilliamsmithlaw.com
`
`Attorneys for Defendant Uber Technologies,
`Inc.
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`12
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`Case 2:21-cv-00072-JRG Document 25 Filed 04/23/21 Page 17 of 17 PageID #: 359
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(h)-(i), counsel for Defendants and counsel for Plaintiff
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`conferred via telephone conference on April 20, 2021. Melissa Smith participated on behalf of
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`Defendants. Sam Baxter participated on behalf of Plaintiff. Despite good faith efforts, no
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`agreement regarding Defendant’s motion could be reached, and the parties ended in an impasse.
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`Plaintiff has indicated that it is opposed to this motion.
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`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 23, 2021, the foregoing was electronically filed in compliance
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`with Local Rule CV-5(a) and served via the Court’s electronic filing system on all counsel who
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`have consented to electronic service on this 23rd day of April, 2021.
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`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
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`13
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